Humorless disclaimer: Nothing on this blog is meant to constitute legal advice. This blog doesn’t create an attorney-client relationship. This blog is not soliciting business. The accuracy of statements made in this blog is not guaranteed. The views expressed herein are those of the authors only.

humor

March 23, 2017

I don’t think any readers of this blog have been living in a cave for the last 25+ years, but if you have, one of the most popular comic strips in the USA is Dilbert, written by Scott Adams. The strip usually depicts life (if it can be called that) as a software engineer in a large company.

This week, one of the characters – ok, THE laziest character – Wally, says something that results in a product that makes lots of money for the company and a likely promotion for Wally. You can see the strips here, here, here and here.

Being a patent attorney, I couldn’t but help find interesting (after my laughter subsided) the fact that Wally gets credit for inventing something, even though it’s clear that it was Dilbert who came up with the idea (conception), and built the prototype (actual reduction to practice). Legally, the fact that it was Wally’s comments that inspired Dilbert are of no import: it was Dilbert who saw how two “problems” could in fact be mutual solutions for each other, and who conceived of a way to implement those mutual solutions. So Dilbert is the inventor here, and Wally isn’t. But from the get-go, Dilbert gives Wally credit, which Wally is more than happy to take.

That the strip would play out this way suggests that for all his brilliance as a comic strip writer, and, presumably, as someone who knows something about copyright (Mr. Adams has a very nice sized bank account thanks to syndication and royalties from the Dilbert strip and related books, mugs, etc.; the Dilbert site itself allows you to buy rights to reproduce individual comic strips in certain contexts), Mr. Adams has a poorer understanding of patent law. Or maybe, giving him the benefit of the doubt, he just understands common misperceptions about patent law, and puts those misperceptions into Dilbert’s world. Either way, it’s clear that people who live with inventors and patents day in and day out could be doing a better job teaching people not involved in this area how patents work and why they’re important.

Since the Dilbert strip can’t leave us hanging with the possibility of a promotion for Wally, there’s going to be at least one more installment in this story, and I envision two possible outcomes. One is that the company gets hit with a product liability suit and drops the product. The other is that the company didn’t bother filing a patent application and gets driven from the market by a cheap knock-off from Elbonia. One way or another, Wally’s promotion vaporizes.

November 30, 2016

There’s a piece today in the Washington Post about how, when viewed microscopically, a cat’s tongue is seen as a perfectly-designed untangling hairbrush, which makes sense given how much time a cat spends licking its fur. The piece ends by stating, “[this research] could bring a cat-tongue-style brush to a hair salon near you. Noel and colleagues are applying to patent their 3D tongue, and they’re planning to talk about possible uses with professionals in various fields — including the beauty industry.”

It’s possible to obtain patent protection on a hairbrush. See, e.g., US 8,627,537, which protects a detangling hairbrush that has been generally well-received, at least if youtube reviews are truthful. And pre-Myriad/Mayo/Alice, I would have assumed that it’s possible to obtain such protection even if such a hairbrush was based on a phenomenon observed in nature.

But in the post-Mayo world? Be careful how you claim your new brush. Avoid telling the public how your invention is based on something found in nature (oops, too late for the people mentioned in the WaPo article). And hope that your patent, if you ever get one, doesn’t come before Justice Breyer, who is short on both patent sense and hair.

April 21, 2016

One of the things I like about the USPTO’s EFS is that for most types of filings, a practitioner doesn’t need a power of attorney in order to file a document or a response. That’s because the USPTO assumes that the typical practitioner values his license to practice, and won’t jeopardize his livelihood by filing something he’s not authorized to file. This allows one practitioner to take over a file from another practitioner even before the POA is filed. We have availed ourselves of this feature on many occasions, and then subsequently filed the POA, also via EFS in the application of interest.

Not so with the Israel PTO’s new electronic patent filing system. Oh no: if the electronic filing system has a different practitioner or group of practitioners associated with an existing application, then you can’t e-file anything in that application until you’ve recorded a POA with the ILPTO and you’ve been associated with the application. Because, you know, the temptation for patent practitioner malfeasance in a country of 300 million people just pales in comparison to that temptation in a country of seven million people, since patents in the smaller must be worth commensurately…less…

Where it gets humorous is the fact that this barrier to electronic filing by non-associated practioners includes, of course, filing a POA so that you will associated with the application. Try to file a POA so that you’ll be associated with an existing application and the system spit an error message back: “You’re not authorized to file papers in this application because you’re not associated with this application”. In other words, You can’t file that POA because you haven’t yet filed a POA.

What does this mean? Apparently, the ILPTO expects POAs to be filed in paper, and only after the administrative task of registering the POA and updating the electronic filing system accordingly will the new practitioner be able to file electronically in that case. How efficient.

Alternatively, perhaps the ILPTO expects the attorney of record to e-file the new POA that takes him off the case. How awkward.

But come June, things stand to get downright Kafka-esque. As mentioned in an earlier post, in the ILPTO’s zeal to make its own life easier, the regulations that enable electronic filing that it pushed through include the provision that starting June 21, patent practitioners and companies (but not individuals acting pro se) will be required to file electronically. If we’re required to file POAs electronically, but the e-filing system won’t let us, how will it be possible to record a POA?

That’s not just an administrative issue: as presently worded, the rules will effectively preclude patent applicants from engaging the patent counsel of their choice, since the rules don’t allow for a change of representative.

Since it appears that the ILPTO didn’t solicit input from actual patent practitioners before it launched its system, here’s some unsolicited input for an after-launch fix. There are two obvious solutions to the problem. The first solution is to follow the USPTO’s lead and to allow all registered practitioners to e-file in all cases (except for certain actions like express abandonment, where a POA should still be required - but the POA itself should be e-file-able). The second solution, not mutually exclusive to the first one, is to continue to allow for paper filings, not just of POAs, but of all papers, by everyone. To encourage electronic filing, the rules should be amended to allow for a discount in cases of initial electronic filing of applications.

Since the proverbial excrement will hit the proverbial fan fairly soon, the ILPTO will have to deal with this issue quickly. I suspect that it won’t adopt either of the approaches suggested above, and instead will say it waives the no-paper-filing rule, but only for POAs, not for other documents.

March 10, 2016

Several years ago, at the behest of Israel patent practitioners who were miffed that their lawyer colleagues receive a cute picture ID card every year from the bar association, the Israel PTO began issuing similar ID cards to licensed patent practitioners. Personally I never quite understood the need for this: it doesn't get me free parking anywhere or a discount on consumer goods, and if I were single there are many, many techniques I'd use before pulling out my patent practitioner card if I was trying to impress a woman. But I guess it makes some people feel official.

This week, a colleague received such an ID card in the envelope shown at right (click to enlarge, if you dare). As shown in the picture, the letter was stamped February 28, which meant it took more than a week to arrive, even though the ILPTO and the post office in question are only a few miles apart. But that's Israel Post for you. Also as shown in the picture, the envelope was addressed to (and the enclosed card was for) a practitioner named Mirit, who works in one of the offices in Tel-Aviv. The problem, also shown in the picture, although not apparent unless you go and check the patent practitioner list on the ILPTO web site, is that the address listed on the computer-generated mailing label was for a P.O. box belonging to a different office, one in Jerusalem.

It turns out this wasn't an isolated incident. Another colleague also received someone else's card, and Mirit's own office, which employs a large number of patent practitioners, reportedly received a like number of cards for people who don't work for that office.

Presumably the person preparing the mailing list somehow shifted one of the columns in the Excel spreadsheet the Office uses to keep track of practitioners, creating this massive mis-match. Or maybe the Office is using a HAL-9000 computer and it's reached the creative phase of its life.

Isn't it good to know that the ILPTO is planning to be a fully electronic office in just three months' time?

November 05, 2015

For last month or so, we've been receiving weekly emails inviting us to an IP conference to be held in Dubai. The organizers are billing it as the "Largest Intellectual Property Congregation in Gulf region".**

Wondering about my possible participation, I wrote the following to the organizers.

Thanks for the invitation. Sounds like an excellent event, but I'm curious: will it be a problem for me, a citizen of Israel, to attend this event? None of the Emirates have diplomatic relations with Israel. It would be a shame to plunk down a registration fee for an event I'm barred from attending on account of my citizenship.

Also, will kosher food be available? And do you know how Dubai looks on visitors who bring Jewish ritual items with them into the country, such as tallit and tefillin?

Are women allowed to drive in Dubai? If I can manage to come to the conference, my wife will accompany me and will want to travel.

Maybe next time you could organize such an event here in Israel, perhaps in Jerusalem the capital? We have a wonderful high tech park, close to many leading companies including the pharmaceutical giant Teva. It would give our Arab neighbors and us a chance to become acquainted in a friendly and relaxed atmosphere.

I'm still waiting for a response.

**Don't know if I'd use the word "congregation" in that way, perhaps someone used Google translate...

September 29, 2015

Last year we wrote about the Clinton campaign's spectacularly unsuccessful attempt to abuse trademark law in order to silence a critic who sold t-shirts and mugs mocking that campaign's candidate. Now it appears that the leading candidate for the Republican Party's nomination is playing the same game, trying to use trademark law to take a swing at a site called www.stoptrump.us that sells t-shirts with a political message that's not to his liking. By making this non-starter threat, he's placed himself in the company of a failed lawyer. And here you thought that he couldn't demean himself any more. Then again, to quote Mel Brooks, "He's just crazy enough to do it", i.e to go to court, where the judge will laugh at him as he kicks him out onto the street.

September 01, 2015

That's a famous line from Mel Brooks' "History of the World", ostensibly uttered by Louis XVI, but on the basis of recently-issued US 9,119,029, it would seem to true of Google the Patent Applicant as well. Here's claim 1:

1. A system for finding friends near a friend, comprising: a memory, housed within a mobile device, for storing a contact list comprising records for a plurality of a user's friends, each record comprising a name of a friend of the user, and a location of the friend; and a locator for receiving as input, from the user, the name of a designated friend of the user in the contact list, the designated friend of the user not being the user himself, and for generating as output a list of at least one proximal friend, each proximal friend comprising the name of a friend of the user also in the contact list, other than the designated friend, whose location is close to the designated friend's location.

Now, my first reaction on reading this claim is, How the @#$% was this claim allowed? This is a claim on a parent of a young child! The parent's brain is stored in the parent's head, and since the parent is mobile, the parent is a mobile device with a memory. The parent's brain stores names of its child's friends. At the park, the child - i.e., the user - asks the parent, "Is friend X here?" The parent looks around and says, "I see X over there by the swings, and your friend Y is with him." In short this claim is anticipated by generations of parents. And if you want to say that somehow it's limited to a non-living device, then generations of parents have made this claimed system obvious.

My second reaction on reading this claim is, How the @#$% was this claim allowed? Under Alice, this isn't patent-eligible! And yet, it turns out that 101 was never raised during prosecution: a non-final rejection issued in May 2014, with an obviousness-type double-patenting rejection and exactly three references cited for an obviousness rejection. A terminal disclaimer and amendments were filed in July 2014, leading to a Final rejection in August 2014 which cited one new reference, which was combined with the already-cited references in an obviousness rejection. An RCE was filed in December 2014, and a non-final rejection issued in January 2015 citing yet one more new reference in an obviousness rejection. This was followed by an amendment, a telephone interview, and allowance of the claims in April 2015. But Alice issued in June 2014, with PTO guidance following. Why no 101 rejection of these claims?

My third reaction on reading this claim is, How the @#$% was this claim allowed? There's no definition in the specification of "close" or "near". The claim fails 112 miserably for being indefinite. So why wasn't a 112 rejection raised?

I'm not a conspiracy theorist, so I don't believe that having Michelle Lee as Director leads to preferential treatment for her former client. But cases like this make one wonder if it isn't good to be the king. Interestingly, Google is listed as the assignee on the ADS and on the front page of the patent, but according to PAIR, no assignment data is available, and there's no assignment info in the Assignment Search page either - meaning no assignment has yet been filed for this patent. Maybe the inventors just listed Google as the applicant to make it look as if they work for Google, and to derive any benefits that may accrue from that.

August 11, 2015

The big news today in the business world is the announcement by Google that's it's doing a corporate restructuring and has set up a company called "Alphabet" that will be the parent company of Google.

It didn't take more than a few hours before this story appeared in the Jerusalem post about a local company, Alefbet Planners Ltd., that has asserted - for now, evidently, only in the press, not in court - that Google's Alphabet is infringing rights in Alefbet's name, which it says it has been using for 25 years. According to the article, Alefbet asserts that it has international clientele, to which it is known as "Alphabet".

Maybe that's the case, maybe not, but if Alefbet wants to stop Google from using "Alphabet", in Israel or anywhere else, it's going to have to prove its assertions, because even if there's a likelihood of confusion between the two names - more on that in a minute - Alefbet never registered a trademark in Israel, let alone in the USA or anywhere else. Sure, it may be able to assert "passing off", i.e. infringement of an unregistered mark, but to sustain such an action it will need to prove that its name has acquired a reputation that people associate with Alefbet. Good luck with that. When I googled "alfabet planners ltd", none of the top hits referred to this company. And there's no site, or even a domain registration, for alfabet.co.il, or any site for the company, apparently. It's hard to prove the existence of a reputation in a name that's invisible.

Even if Alefbet can prove such a reputation, it will need to show a likelihood of confusion. In the US alone, there are several hundred live and dead marks containing the word "alphabet". If those names weren't deemed to be confusing with one another, how would they be confused with the visually and aurally distinct "alefbet"? Moreover, according to the press release, Alefbet is "third largest planning, design and architecture company in Israel". That doesn't sound like Google's, or Alphabet's, niche. No confusion, no infringement.

The first rule of lawyering is never make a threat that you're not prepared to follow up on. Alfabet's empty threats merely confirm that which we already knew: Alfabet didn't avail itself of good legal counsel. If it had, it would have registered some trademarks by now.

That doesn't mean Google is necessarily off the hook. Given the large number of existing companies and products out there with the name "Alphabet" or a variation thereof in their name, Google has cause to be concerned. For example, Germany's Software AG has some software products named "Alfabet". But although one may wonders what Google's lawyers were thinking, it's still a good bet that Google's legal advisors looked into the matter and think that Google can prevail.

Unless, of course, the name "Alphabet" was chosen by the marketing department, without consulting the company lawyers. But that could never happen, right?

July 16, 2015

In the summer of 2012 we filed a non-provisional application at the USPTO. We included color drawings (actually, photographs). We also duly filed a petition for the USPTO to accept the color drawings, because, for reasons that presumably have to do with the ability of the PTO to reproduce paper copies of color drawings, 37 CFR 1.84 requires the filing of a petition. It's not a free petition, there's a fee involved.

Why did it take this long for the USPTO to act on the petition? Only The Shadow knows.

At least in this case, the USPTO actually acted on the petition. We have even older provisional applications in which we filed petitions for color drawings that received no attention from the USPTO. Maybe it's time to ask for the petition fees back, although I'm guessing the USPTO has never heard of interest or compounding.

Please, USPTO, act on these things faster. Three months to act on a petition might be reasonable, but three years? Come on.

And while we're on the topic, in praise of the USPTO, at least it accepts color drawings. WIPO has been dilly-dallying on this for years. Every time I see Matthew Bryan of the WIPO PCT legal division, I ask him when WIPO is going to join the 21st century and allow color figures. Sheesh, they've only been standard in every significant scientific journal since, oh, the 1980's at least. It's kinda hard to meaningfully represent stained cells in black-and-white photographs. The last time I inquired, I was told that there was debate among some countries about the standard to be used. Ahhh.

BTW, it seems to me that to get around WIPO's limitations, one could file an appendix containing a color photo as ASCII text that can be read by an image-reading program. Haven't tried that one myself, but in this day and age it should certainly count as disclosure, at least in countries where they have computers.

March 31, 2015

I posted the following earlier today on one of Carl Oppedahl's listserves - sort of a follow-on to this earlier post. So far positive responses, but no one coming forward with the name of the individual I'm seeking.

- - - - - - - - - - - -

My question today is straightforward: who is the director of the Office of Patent Application Processing (OPAP)? That's all the info I really need, and I can't find it on the PTO's web site.

You can stop reading now, but feel free to read the following exercise in venting, the substance of which I know many of you can relate to.

We have a patent that issued recently. We filed a divisional a few weeks before issuance.

We have now received a notice from the Office of Patent Application Processing (OPAP): there's a problem with the drawings in the divisional.

The letter from OPAP is (as usual) inscrutable. All it says is that the drawings are unacceptable because "The drawings must be reasonably free from erasures and must be free from alterations, overwriting, interlineations, folds, and copy marks. See Figs. XX and YY." When I look at those drawings, I don't see any of those defects.

More to the point, the drawings in this application are the exact same drawings that OPAP had no problem with when the parent case entered the national stage a few years ago. The exact same drawings that issued in the parent case today! Is OPAP saying the issued patent is invalid?

My guess is that there are some dashed lines in the drawings that are related to in the specification, that the Examiner or anyone skilled in the art will understand when read in conjunction with the spec. But that the geniuses in OPAP think constitute stray lines. Because, you know, they know better than the inventors. Or the Examiner who examined and allowed the parent case.

OPAP-originating stupidity is a recurring theme in this forum. How many threads have there been about the idiocy associated with filing of new application data sheets? I'm sick of this stupidity. If there really is a problem with the drawings in this case, or in any case, OPOP should provide a copy of the problematic drawings with colored markings showing exactly where in those drawings the alleged problems occur. Or it can provide a phone number that connects to the person who issued the letter, so you can get real clarification. (There's no phone number on this particular notice, just an "e-signature" that says /fberhane/. The employee locator on the PTO web site says the person is named Frehiwot Berhance, but calling that number, (703)756-1385, yields no human answer, just a 1-second unintelligible voice after several rings, followed by a beep to leave a message.) Either of those alternatives would be infinitely more efficient than the present "guess what I'm thinking" game, in which you guess what's bothering OPAP and file new papers, only to be told by the OPAP, in yet another inscrutable letter, "nyeah nyeah, you guessed wrong, try again!".

I heard recently about a case in which the application was assigned, and the assignment is on record, but the PTO refuses to recognize a power of attorney signed by the assignee of record because there's no application data sheet on file listing the assignee as a non-applicant assignee. Something's amiss when dumb PTO formalities trump the law to preclude the acceptance of a valid POA.

There's no excuse for the tremendous waste of time and money that OPAP forces applicants to spend on what can only charitably be described as pure b.s.

As I said at the outset, my question for the list is, who is the director of OPAP? The employee locator doesn't say. We want to speak directly with him to get this issue resolved. I'm not going to have anyone at our end waste time chasing after squirrels who are afraid of their own shadow (who probably won't want to talk to us anyway if we say we're the attorney and not the inventor, because we haven't filed a POA yet, because first we want to record the assignment from the parent case in this case, and then file a POA from the assignee). Nor will we waste time filing papers that don't need to be filed. I want to go straight to the top to resolve this.

March 19, 2015

Now that we're into the post-ballot-casting, horse-trading-wheeling-dealing part of the Israeli election process, I went back and checked on the Likud video that I wrote about here. It's no longer on Youtube: the Jordanian band whose music it used without permission made a copyright claim. No idea if, as I predicted would happen, it's been re-posted. No idea either if they sent the copyright complaint to Youtube after reading the post here, but if so, I won't be seeking payment for legal advice.

February 16, 2015

Israel has national elections next month, in which, yet again, Israelis will get to go to the polls to vote for a party that won’t represent them. I suppose that’s better than not getting to go to polls to achieve the same result, which is what transpires in the PA. Unfortunately, based on what gets reported in the mainstream media, we have no idea as to the views of the leading candidates on the issues of the day, because for the most part we’ve been reading and hearing about media-manufactured crises crudely designed to embarrass the current prime minister, and lots of mud-slinging between the heads of the different parties. Including the most succinct expression of what’s on the mind of the present opposition heads, the bumper sticker reading “Anyone but Bibi”.

Over the weekend, the PM’s Likud party came out with a new anti-left campaign video, which shows some ISIS a-holes in a pickup truck listening to an Arabic hip-hop song. They stop, ask someone for directions to Jerusalem, and are told to turn left (which they do, at which point we can see said bumper sticker - in Hebrew - on the back of the truck. Cute.) This is followed by a The-left-will-give-into-terror-only-the-Likud-will-keep-you-safe message. After the ad’s release, the usual suspects on the political left trotted out their usual responses – “incitement” (whatever the heck that’s supposed to mean), beneath contempt, beyond the pale, there should be a criminal investigation, etcetera. Ho-hum.

More interesting to this IP practitioner was this report of the reaction of the band that wrote and performed the rap song used in the video, a couple of Jordanian guys who call themselves “Palestinians”: they say that the Likud didn’t obtain their permission to use the video, and that by associating them with ISIS (which – surprise! – is not particularly popular in parts of Jordan right now after immolating a Jordanian pilot), the Likud has placed their lives in danger. They’re threatening legal action.

Of course, this claim got me to thinking, what legal action could they take, and where could they take it? I would think their main goal would be to get the video taken down, and perhaps to receive some sort of compensation for its unauthorized use. Inasmuch as the Likud used a significant portion of the song, and it plays through nearly the whole video, I don’t think “fair use” would be much of a defense. So an injunction is in principle a possibility, as is financial remuneration.

But where to seek such redress? I suppose they could approach a Jordanian court. I don’t know anything about Jordanian copyright law, but even if they were able to get an injunction and/or a monetary judgment there, good luck enforcing it here in Israel in a timely fashion, if at all.

More promising would be enforcement in Israel. Maybe. Jordan is member of the Bern Convention, so from the Israeli perspective, if under Jordanian law copyright inhered in their song as soon as it was fixed in a tangible medium, then per section 9 of the Israel copyright statute the song also became copyrighted in Israel at the same time. Moreover, Israeli courts grant injunctions for IP infringement, and there is statutory compensation for copyright infringement even in the absence of proof of damage.

There is, of course, the technical matter of finding a lawyer who would represent them: since 2000, the Jordanian Bar Association has forbidden its members from having any contact with Israelis, let alone representing them. So in this case the band members would need to retain an Israeli lawyer directly, one who isn’t bothered by the asymmetry in representing someone from a country where that lawyer himself couldn’t obtain representation. However, I have no doubt that such creatures exist, including some who would take a perverse pleasure in representing the band in this case. It wouldn’t be the first time Israel’s openness and tolerance proved to be its undoing.

After retaining an Israeli lawyer, the band members would need to get a judge’s attention soon; obtaining an injunction after the elections would by a Pyrrhic victory. While there are procedures for obtaining emergency injunctions, I’m not going to speculate on whether or not an Israeli judge would grant such a motion in this case, and if he doesn’t, the case might not be heard for years. And here’s a bit of (not so) heretical speculation: the alacrity with which the case is handled might depend on the judge’s political views.

In addition to the straightforward assertion of infringement for use of the song without permission, the band members would also, apparently, have a claim for infringement of their “moral rights” per sections 45 and 46 of the statute to have their names associated with their work, and possibly for a derogatory association between them and the song by virtue of its being used in a Likud advertisement.

If infringement is found, the authors could receive up to 100,000 NIS (about $25K) without proof of injury. But since the big political parties routinely go into debt to finance their campaigns, and then make the public pay for the shortfall, I wouldn’t count on monetary compensation if I were a member of the band.

Of course, the more obvious, faster and surer way to get the clip taken down is to file a copyright complaint with Youtube, where the clip is hosted. Or maybe it’s not so obvious: as of this writing, the clip is still up.

It’s a safe bet that even if the clip comes down on Youtube, it will be reposted on Youtube and other clip-sharing services.